| To: | DEWITT LLP (cftm@dewittross.com) |
| Subject: | U.S. Trademark Application Serial No. 88225026 - DEWITT - 35551042 |
| Sent: | October 15, 2019 08:22:41 PM |
| Sent As: | ecom122@uspto.gov |
| Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
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U.S. Application Serial No. 88225026
Mark: DEWITT
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Correspondence Address:
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Applicant: DEWITT LLP
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Reference/Docket No. 35551042
Correspondence Email Address: |
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The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned. Respond using the Trademark Electronic Application System (TEAS). A link to the appropriate TEAS response form appears at the end of this Office action.
This Office action is supplemental to and supersedes the previous Office action issued on March 9, 2019 in connection with this application. Based on information and/or documentation in applicant’s response, the trademark examining attorney now issues the following new requirement: Section 2(f) Claim Requirement. See TMEP §§706, 711.02.
In a previous Office action dated March 9, 2019, the trademark examining attorney refused registration of the applied-for mark based on the following: Trademark Act Section 2(d) for a likelihood of confusion with a registered mark and Trademark Act Section 2(e)(4) for the mark being primarily merely a surname.
In addition, the following refusals are continued and maintained: Trademark Act Section 2(d) and Trademark Act Section 2(e)(4). See TMEP §713.02.
The following is a SUMMARY OF ISSUES that applicant must address:
· Section 2(d) Refusal – Likelihood of Confusion – Partial Refusal
· Section 2(e)(4) Refusal – Mark is Primarily Merely a Surname
· Supplemental Register Advisory
· New Issue: Section 2(f) Claim Requirement
Applicant must respond to all issues raised in this Office action and the previous March 9, 2019 Office action, within six (6) months of the date of issuance of this Office action. 37 C.F.R. §2.62(a); see TMEP §711.02. If applicant does not respond within this time limit, the application will be abandoned. 37 C.F.R. §2.65(a).
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION – PARTIAL REFUSAL
This refusal only applies to the following services: “business acquisition and merger consultation; business planning” in class 035.
Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 4520056. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the registration attached to the Office Action dated March 9, 2019 at p. 6-9.
The applicant has applied to register the mark DEWITT in standard character format for “business acquisition and merger consultation; business planning” in class 035.
The mark in Registration No. 4520056 is DEWITT in standard character format for in pertinent part “Provision of online business and commercial information; market research and analysis; compilation and preparation of statistical information; business data retrieval services, namely, market research and business intelligence services” in class 035.
Please note, both marks are in standard character format.
Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the services of the parties. See 15 U.S.C. §1052(d). Likelihood of confusion is determined on a case-by-case basis by applying the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) (called the “du Pont factors”). In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017). Only those factors that are “relevant and of record” need be considered. M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 1382, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006) (citing Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1241, 73 USPQ2d 1350, 1353 (Fed. Cir. 2004)); see In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1744 (TTAB 2018).
Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of confusion analysis: (1) the similarities between the compared marks and (2) the relatedness of the compared services. See In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); Federated Foods, Inc. v. Fort Howard Paper Co.,544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) (“The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks.”); TMEP §1207.01.
Comparison of the Marks
In the present case, applicant’s mark is DEWITT and registrant’s mark is DEWITT. These marks are identical in appearance, sound, and meaning, “and have the potential to be used . . . in exactly the same manner.” In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017). Additionally, because they are identical, these marks are likely to engender the same connotation and overall commercial impression when considered in connection with applicant’s and registrant’s respective services. Id.
Therefore, the marks are confusingly similar.
Comparison of the Services
The applicant’s services are “business acquisition and merger consultation; business planning” in class 035.
The registrant’s services in Registration No. 4520056 are in pertinent part “Provision of online business and commercial information; market research and analysis; compilation and preparation of statistical information; business data retrieval services, namely, market research and business intelligence services” in class 035.
As the attached evidence shows, the applicant's business acquisition and merger consultation and business planning services and registrant’s provision of online business and commercial information, compilation and preparation of statistical information and market research and analysis services in Registration No. 4520056 are commercially related, because many companies provide these types of services.
The attached Internet evidence consists of screenshots from Bain & Company, American Fortune, Business Acquisition & Merger Associates, BBG Business Benefits Group, Cayenne Consulting, Authenticity Consulting, LLC, B-plan Experts and Suomin Consulting. See the evidence attached to the Office Action dated March 9, 2019 at p. 10-27. This evidence establishes that the same entity commonly provides the relevant services and markets the services under the same mark. Thus, applicant’s and registrant’s services are considered related for likelihood of confusion purposes. See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009). Accordingly, purchasers are likely to be confused as to the source of the services when they encounter business acquisition and merger consultation and business planning services and provision of online business and commercial information, compilation and preparation of statistical information and market research and analysis services offered under highly similar marks. Therefore, applicant's services and registrant's services are considered related for likelihood of confusion purposes.
Applicant’s Arguments
Applicant primarily argues registrant’s services do not explicitly cover applicant’s services, because registrant does not provide applicant’s services, as shown by the attached evidence. See Response to Office Action dated September 6, 2019 at p. 2 & 9-12. However this is unpersuasive, because the compared services need not be identical or even competitive to find a likelihood of confusion. See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000); TMEP §1207.01(a)(i). They need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the services] emanate from the same source.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i). Moreover, determining likelihood of confusion is based on the description of the services stated in the application and registration at issue, not on extrinsic evidence of actual use. See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (citing In re i.am.symbolic, llc, 866 F.3d 1315, 1325, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)). Therefore, applicant’s services and registrant’s services are related, because many companies provide these services and market these services under the same mark, as shown by the evidence attached to the Office Action dated March 9, 2019 at p. 15-32.
Thus, evidence and arguments that constitute a collateral attack on a cited registration, such as information or statements regarding a registrant’s nonuse of its mark, are not relevant during ex parte prosecution. See In re Dixie Rests., 105 F.3d 1405, 1408, 41 USPQ2d 1531, 1534-35 (Fed. Cir. 1997); In re Peebles Inc., 23 USPQ2d 1795, 1797 n.5 (TTAB 1992); TMEP §1207.01(d)(iv). Such evidence and arguments may, however, be pertinent to a formal proceeding before the Trademark Trial and Appeal Board to cancel the cited registration.
However, in In re Strategic Partners, Inc., 102 USPQ2d 1397, 1399-1400 (TTAB 2012), the Trademark Trial and Appeal Board only reversed a Section 2(d) refusal based on an applicant’s prior registration for the following unique set of facts: (1) the marks in applicant’s prior registration and application were virtually identical (“no meaningful difference” existed between them, such that they were “substantially similar”); (2) the goods were identical in part; and (3) the prior registration had co-existed for at least five years with the cited registration (both being more than five years old and thus immune from attack on likelihood of confusion grounds). See TMEP §1207.01. The Board acknowledged these facts constituted a “unique situation,” such that an applicant’s prior registration would generally need to fit within these precise parameters to overcome a Section 2(d) refusal. In re Strategic Partners, Inc., 102 USPQ2d at 1400; see In re USA Warriors Ice Hockey Program, Inc., 122 USPQ2d 1790, 1793-94 (TTAB 2017); TMEP §1207.01.
In this case, by contrast, applicant’s prior registration does not correspond to the facts set forth in In re Strategic Partners, Inc. See TMEP §1207.01. Specifically, applicant’s mark in the application is not virtually identical to the mark in applicant’s prior registration, because applicant’s mark in the prior registration included the additional distinctive wording of “ROSS & STEVENS”, which is not in the mark in applicant’s application.
Applicant has requested the trademark examining attorney suspend this application based on the cited registration being within their Section 8 maintenance window. See Response to Office Action dated September 6, 2019 at p. 2. However, an application can only be suspended when a cited registration is within their Section 8 six-month grace period following the sixth year after the date of registration and before the trademark examining attorney is ready to issue a final refusal under Section 2(d). See TMEP § 716.02(e). Therefore, suspension is not proper in this case, because the trademark examining attorney is hereby issuing a subsequent non-final office action and the cited registration will not be within their Section 8 six-month grace period until April 30, 2020.
In summary, the marks are confusingly similar and the services are related. Therefore, purchasers are likely to be confused as to the source of the services. Thus, registration is refused pursuant to Section 2(d) of the Trademark Act.
Applicant should note the following additional ground for refusal.
SECTION 2(e)(4) REFUSAL – MARK IS PRIMARILY MERELY A SURNAME
An applicant’s mark is primarily merely a surname if the surname, when viewed in connection with the applicant’s recited services, “‘is the primary significance of the mark as a whole to the purchasing public.’” Earnhardt v. Kerry Earnhardt, Inc., 864 F.3d 1374, 1377, 123 USPQ2d 1411, 1413 (Fed. Cir. 2017) (quoting In re Hutchinson Tech. Inc., 852 F.2d 552, 554, 7 USPQ2d 1490, 1492 (Fed. Cir. 1988)); TMEP §1211.01.
The following five inquiries are often used to determine the public’s perception of a term’s primary significance:
(1) Whether the surname is rare;
(2) Whether anyone connected with applicant uses the term as a surname;
(3) Whether the term has any recognized meaning other than as a surname;
(4) Whether the term has the structure and pronunciation of a surname; and
(5) Whether the term is sufficiently stylized to remove its primary significance from that of a surname.
In re Eximius Coffee, LLC, 120 USPQ2d 1276, 1278 & n.2, 1282-83 (TTAB 2016) (citing In re Benthin Mgmt. GmbH, 37 USPQ2d 1332, 1333-34 (TTAB 1995) for the Benthin inquiries/factors); TMEP §1211.01; see also In re Etablissements Darty et Fils, 759 F.2d 15, 16-18, 225 USPQ 652, 653 (Fed. Cir. 1985).
These inquiries are not exclusive, and any of these circumstances – singly or in combination – and any other relevant circumstances may be considered when making this determination. In re Eximius Coffee, LLC, 120 USPQ2d at 1277-78; TMEP §1211.01. For example, when the applied-for mark is not stylized, it is unnecessary to consider the fifth inquiry. In re Yeley, 85 USPQ2d 1150, 1151 (TTAB 2007); TMEP §1211.01.
Please see the attached evidence from Forbears.io establishing the surname significance of DEWITT. See the evidence attached to the Office Action dated March 9, 2019 at p. 28. This evidence shows the applied-for mark appearing 34,523 times as a surname in the United States in a geographically indexed and cross-referenced directory of sources for family history research. See Id.
Moreover, evidence that a term has no recognized meaning or significance other than as a surname is relevant to determining whether the term would be perceived as primarily merely a surname. See In re Weiss Watch Co., 123 USPQ2d 1200, 1203 (TTAB 2017); In re Eximius Coffee, LLC, 120 USPQ2d 1276, 1280 (TTAB 2016); TMEP §1211.02(b)(vi). The attached evidence from Wikipedia shows that the word DEWITT is a surname and a given name. See the evidence attached to the Office Action dated March 9, 2019 at p. 30. The attached evidence from the Columbia Gazetteer of the World shows that the word DEWITT is the name of a county in Texas. See the evidence attached to the Office Action dated March 9, 2019 at p. 31. However, a term’s primary significance as a surname may not be lessened even if it also has some minor significance as a geographical term. See In re Hamilton Pharm. Ltd., 27 USPQ2d 1939, 1943 (TTAB 1993); In re Picone, 221 USPQ 93, 95 (TTAB 1984); TMEP §1211.01(a)(iii). Therefore, even though the term DEWITT has some minor significance as a geographical term and is also a given name, the term’s primary significance is of a surname.
Lastly, the mark is in standard character form, lacking any stylization which would remove its primary significance from that of a surname. Therefore, upon weighing of the above factors, the primary significance of the term DEWITT to purchasers is primarily merely a surname. Thus, registration is refused pursuant to Section 2(e)(4) of the Trademark Act.
Applicant’s Argument
Applicant primarily argues that the Section 2(f) claim in the Response to Office Action dated September 6, 2019 at p. 1-3 obviates the Section 2(e)(4) Refusal. However, applicant did not meet all the requirements necessary to assert a Section 2(f) claim based on five years use in an intent-to-use application. Therefore, applicant must perfect the Section 2(f) claim, as discussed below in the Section 2(f) Claim Requirement.
SUPPLEMENTAL REGISTER ADVISORY
If applicant files an acceptable allegation of use and also amends to the Supplemental Register, the application effective filing date will be the date applicant met the minimum filing requirements under 37 C.F.R. §2.76(c) for an amendment to allege use. TMEP §§816.02, 1102.03; see 37 C.F.R. §2.75(b). In addition, the undersigned trademark examining attorney will conduct a new search of the USPTO records for conflicting marks based on the later application filing date. TMEP §§206.01, 1102.03.
(1) Use of the registration symbol ® with the registered mark in connection with the designated services, which provides public notice of the registration and potentially deters third parties from using confusingly similar marks.
(2) Inclusion of the registered mark in the USPTO’s database of registered and pending marks, which will (a) make it easier for third parties to find it in trademark search reports, (b) provide public notice of the registration, and thus (c) potentially deter third parties from using confusingly similar marks.
(3) Use of the registration by a USPTO trademark examining attorney as a bar to registering confusingly similar marks in applications filed by third parties.
(4) Use of the registration as a basis to bring suit for trademark infringement in federal court, which, although more costly than state court, means judges with more trademark experience, often faster adjudications, and the opportunity to seek an injunction, actual damages, and attorneys’ fees and costs.
(5) Use of the registration as a filing basis for a trademark application for registration in certain foreign countries, in accordance with international treaties.
See 15 U.S.C. §§1052(d), 1091, 1094; J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition §§19:33, 19:37 (rev. 4th ed. Supp. 2017).
SECTION 2(F) CLAIM REQUIREMENT
Applicant asserted a claim of acquired distinctiveness under Trademark Act Section 2(f) based on applicant’s use of the mark in commerce with applicant’s services for five years prior to filing the application. See 15 U.S.C. §1052(f). However, the application indicates that the mark is not currently in use but will be used by applicant in the future. Thus, applicant needs to clarify whether applicant intends to claim acquired distinctiveness in his or her application or if applicant inadvertently included this claim of five years’ use. See 37 C.F.R. §2.61(b); TMEP §814.
If applicant intends to maintain this claim, applicant must satisfy the requirements specified in the following paragraph. See TMEP §1212.09(a)-(b). If applicant does not intend to maintain this claim, applicant should request the Section 2(f) claim be deleted from the application. See TMEP §1212.09(a).
An intent-to-use applicant who has used the same mark on related goods and/or services may assert a claim of acquired distinctiveness under Section 2(f) before filing an allegation of use, if applicant can establish that, as a result of applicant’s use of the same mark on other goods and/or services, the mark has become distinctive of the goods and/or services in the intent-to-use application, and that this previously created distinctiveness will transfer to the goods and/or services in the intent-to-use application when use in commerce begins. In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 1347, 57 USPQ2d 1807, 1812 (Fed. Cir. 2001); In re Binion, 93 USPQ2d 1531, 1538 (TTAB 2009); TMEP §1212.09(a).
Failure to comply with this request for information can be grounds for refusing registration. In re AOP LLC, 107 USPQ2d 1644, 1651 (TTAB 2013); In re DTI P’ship LLP, 67 USPQ2d 1699, 1701 (TTAB 2003); TMEP §814.
RESPONSE GUIDELINES
For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action. For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For a requirement, applicant should set forth the changes or statements. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE: Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application. See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820. TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $125 per class of services. 37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04. However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone or e-mail without incurring this additional fee.
How to respond. Click to file a response to this nonfinal Office action
/Rebecca Lee/
Examining Attorney
Law Office 122
(571) 272 - 7809
Rebecca.Lee1@uspto.gov
RESPONSE GUIDANCE